Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 16/04/2018

OAKLEIGH IP SERVICES LIMITED

Unit 19, Wrotham Business Park

Barnet, Hertfordshire EN5 4SZ

REINO UNIDO

Application No:	017087016
Your reference:	MERZ85062
Trade mark:	TREK
Mark type:	Word mark
Applicant:	Trek Bicycle Corporation 801 West Madison Street Waterloo, Wisconsin 53594 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/10/2017 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 20/12/2017, which may be summarised as follows: the inherent distinctiveness of the trade mark ‘TREK’ was previously considered by the Office and the Office has accepted the mark for the goods in Classes 9, 11, 18, 25 and 28.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

In the present case, the sign applied for immediately informs consumers without further reflection that the goods applied for are equipment intended for use when trekking.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of trade mark, which is to distinguish the goods or services of one undertaking from those of its competitors.

As regards the applicant’s observations, the Office replies as follows:

The inherent distinctiveness of the trade mark ‘TREK’ was previously considered by the Office, and the Office accepted the mark for the goods in Classes 9, 11, 18, 25 and 28.

As regards the applicant’s argument that an identical trade mark has been accepted by the EUIPO, according to settled case-law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T- 36/01, Glass pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

The applicant refers to the previous EUTM (CTM) registration and argues that granting the registration of this mark automatically means that the sign applied for herein should also be allowed, since both cover the same goods and services. In response thereto, the Office notes that the decision to accept that mark was taken more than 10 years ago, when case-law was considerably less developed than it is today.

Moreover, prior registered EUTMs do not constitute binding precedents. Registration practice develops over time and it is inevitable that questionable marks sometimes find their way onto the EUTM register. If a mark has achieved registration when it ought not to have, the Office should not compound that error by allowing a second trade mark to remain in the register. As stated in case-law, no person can rely, in support of his or her claims, on unlawful acts committed in favour of another. Furthermore, it must be noted that such marks may be challenged within the framework of cancellation proceedings and do not need to stay on the register contrary to public interest.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(1)(c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 087 016 is hereby rejected for the following goods and services:

EN-9 Signalling and checking apparatuses and instruments, apparatuses and

instruments for controlling, ducting, switching, transforming, accumulating, regulating or controlling electricity, especially for bicycles; data processing equipment and computers, in particular bicycle computers; consumer electronic audio systems and sound transmitting apparatus; corded and wireless speakers, amplifiers, microphones, headphones, headsets, earbuds, earphones; fitness tracking devices.

EN-11 Apparatus for lighting, in particular for bicycles; lights, headlights, tail lights, light sets.

EN-18 Leather and imitations of leather, and goods made of these materials, namely seat bags, back packs and rucksacks.

EN-25 Clothing, headgear, footwear, gloves; all of the aforementioned goodis adapted for wear when participating in sport and fitness activities.

EN-28 Fitness and exercise equipment.

EN-35 Retail services connected with the sale of nutritional supplements for human consumption, anti-chafe balm, chamois cream, back packs and rucksacks, clothing for wear when participating in sport and finess activities, headgear for wear when participating in sport and finess activities, gloves for wear when participating in sport and finess activities, games and playthings, gymnastic and sporting articles, fitness

and exercise equipment, proteinaceous foodstuffs, sports drinks, energy drinks.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Liina PUU